USPTO Patents Application 09666213

United States Bstent and TkAPEMARK Office

4

UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Address: COMMISSIONER OF PATENTS AND TRADEMARKS
Washington, D.C. 20231
www-.u9pLo.gov

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/666,213

09/21/2000

Melissa L Dopps

WEYCn6173

9095

26389 7590 05/09/2002

CHRISTENSEN, O'CONNOR, JOHNSON, KINDNESS, PLLC
1420 FIFTH AVENUE
SUITE 2800

SEATTLE, WA 98101-2347

EXAMINER

STEPHENS, JACQUELINE F

ART UNIT

PAPER NUMBER

3761

DATE MAILED: 05/09/2002

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 07-01)

Office Action Summary

Application No.

09/666,213

Applicant(s)
DOPPS ETAL

examiner

Jacqueline F Stephens

Art Unit

3761

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 . 1 36(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).

- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

1 )□ Responsive to communication(s) filed on .

2a)n This action is FINAL. 2b)[EI This action is non-final.

3) n Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1, 453 O.G. 213.
Disposition of Claims

4) S Claim(s) 1-73 is/are pending in the application.

4a) Of the above claim(s) 36. 37, 38, 39, 40, and 49-73 is/are withdrawn from consideration.

5) n Claim(s) is/are allowed.

6) KI Claim(s) 1-35,38 and 41-48 is/are rejected.
?)□ Claim(s) is/are objected to.

8) n Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) 0 The specification is objected to by the Examiner.

10) K The drawing(s) filed on 21 September 2000 is/are: a)n accepted or b)lEl objected to by the Examiner

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).

1 1) n The proposed drawing correction filed on is: 3)0 approved b)n disapproved by the Examiner.

If approved, corrected drawings are required in reply to this Office action.

12) 0 The oath or declaration is objected to by the Examiner.
Priority under 35 U.S.C. §§119 and 120

13) 0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C, § 1 19(a)-(d) or (f).

a)nAII b)n Some* 0)0 None of:

1 .□ Certified copies of the priority documents have been received.

2. n Certified copies of the priority documents have been received in Application No. .

3. n Copies of the certified copies of the priority documents have been received in this National Stage

application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

14) ^ Acknowledgnnent is made of a claim for domestic priority under 35 U.S.C. § 1 1 9(e) (to a provisional application).

a) □ The translation of the foreign language provisional application has been received.

15) 0 Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.

Attachment(s)

1 ) □ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3) Paper No{s). ,

2) Q Notice of Draftsperson's Patent Drawing Review (PTO-948) 5) Q Notice of Informal Patent Application (PTO-152)

3) □ Infomiation Disclosure Statement(s) {PTO-1449) Paper No(s) . 6) □ Other:

U.S. Patent and Trademark Office
PTO-326 (Rev. 04-01)

Office Action Summary

Part of Paper No. 5

Application/Control Number: 09/666,213 Page 2

Art Unit: 3761

DETAILED ACTION
Election/Restrictions

1 . Restriction to one of the following inventions is required under 35 U.S.C. 121:

I. Claims 1-55, drawn to an absorbent composite, classified in class 604,
subclass 378.

II. Claims 56-73, drawn to a method of making a fibrous web, classified in
class 428.

The inventions are distinct, each from the other because of the following reasons:

2. Inventions I and II are related as process of making and product made. The
inventions are distinct if either or both of the following can be shown: (1) that the
process as claimed can be used to make other and materially different product or (2)
that the product as claimed can be made by another and materially different process
(MPEP § 806.05(f)). In the instant case an absorbent composite may be formed without
combining matrix fibers and an absorbent material in an aqueous dispersion medium to
form a fibrous slurry.

3. Because these inventions are distinct for the reasons given above and have
acquired a separate status in the art as shown by their different classification, restriction
for examination purposes as indicated is proper.

4. This application contains claims directed to the following patentably distinct
species of the claimed invention:

Species 1 - an absorbent composite in a storage layer

Application/Control Number: 09/666,213 Page 3

Art Unit: 3761

Species 2 - an absorbent composite in an acquisition layer

Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for
prosecution on the merits to which the claims shall be restricted If no generic claim is
finally held to be allowable. Currently, claim 38 is generic.

Applicant is advised that a reply to this requirement must include an identification
of the species that is elected consonant with this requirement, and a listing of all claims
readable thereon, including any claims subsequently added. An argument that a claim
is allowable or that all claims are generic is considered nonresponsive unless
accompanied by an election.

Upon the allowance of a generic claim, applicant will be entitled to consideration
of claims to additional species which are written in dependent form or otherwise include
all the limitations of an allowed generic claim as provided by 37 CFR 1.141. If claims
are added after the election, applicant must indicate which are readable upon the
elected species. MPEP § 809.02(a).

Should applicant traverse on the ground that the species are not patentably
distinct, applicant should submit evidence or identify such evidence now of record
showing the species to be obvious variants or clearly admit on the record that this is the
case. In either instance, if the examiner finds one of the inventions unpatentable over
the prior art, the evidence or admission may be used in a rejection under 35
U.S.C. 103(a) of the other invention.

Application/Control Number: 09/666,213 Page 4

Art Unit: 3761

5. During a teleplione conversation with George Renzoni on 3/26/02 a provisional
election was made without traverse to prosecute the invention of Group I, Species 1 ,
claims 1-35, 38, and 41-48. Affirmation of this election must be made by applicant in
replying to this Office action. Claims 49-73 are withdrawn from further consideration by
the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. Applicant
has requested cancellation of claims 36, 37, 39, and 40. These claims must be
cancelled by amendment in response to this office action.

6. Applicant is reminded that upon the cancellation of claims to a non-elected
invention, the inventorship must be amended in compliance with 37 CFR 1 .48(b) if one
or more of the currently named inventors is no longer an inventor of at least one claim
remaining in the application. Any amendment of inventorship must be accompanied by
a request under 37 CFR 1 .48(b) and by the fee required under 37 CFR 1 . 1 7(i).

Drawings

7. Photographs are not ordinarily permitted in utility patent applications. However,
the Office will accept photographs in utility patent applications only after the granting of
a petition filed under this paragraph which requests that photographs be accepted. See
MPEP 608.02(b)(1 ). Photographs are accepted in a utility patent application when they
are the only practical medium by which to disclose the subject matter sought to be
patented. MPEP 608.02 (a)(1) and (2).

8. The drawings are objected to under 37 CFR 1 .83(a). The drawings must show
every feature of the invention specified in the claims. Therefore, the feature of "the

Application/Control Number: 09/666,213 Page 5

Art Unit: 3761

band continuous along the composite's length in the machine direction" (claim 2),
"bands substantially parallel (claim 3) must be shown or the feature(s) canceled from
the claim(s). No new matter should be entered.

A proposed drawing correction or corrected drawings are required in reply to the
Office action to avoid abandonment of the application. The objection to the drawings
will not be held in abeyance.

Claim Rejections - 35 USC §112

9. The following is a quotation of the first paragraph of 35 U.S.C. 112:

The specification shall contain a written description of the invention, and of the manner and process of
making and using it. in such full, clear, concise, and exact terms as to enable any person skilled in the
art to which it pertains, or with which it is most nearly connected, to make and use the same and shall
set forth the best mode contemplated by the inventor of carrying out his invention.

10. Claims 1-35, 38, and 41-48 are rejected under 35 U.S.G. 1 12, first paragraph, as
containing subject matter which was not described in the specification in such a way as
to enable one skilled in the art to which it pertains, or with which it is most nearly
connected, to make and/or use the invention commensurate in scope with these claims.
In this case, the fibrous bands are described in the specification and claims as
substantially free of absorbent material. The fibrous bands are disclosed as in a fibrous
base, which does contain absorbent material. It is unclear from the specification in
combination with the drawings which area of the absorbent composite is the fibrous
base as both areas 14/18 and 16 contain absorbent material. Additionally, the drawings
and the description of Figure 1 (pages 8 and 9) do not depict fibrous bands in a fibrous
base as claimed. Correction is required.

Application/Control Number: 09/666,213

Page 6

Art Unit: 3761

Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Jacqueline F Stephens whose telephone number is
(703)308-8320. The examiner can normally be reached on Monday-Friday 9:00-5:30.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, John Weiss can be reached on (703)308-2702. The fax phone numbers for
the organization where this application or proceeding is assigned are (703)305-3590 for
regular communications and (703)306-4520 for After Final communications.

Any inquiry of a general nature or relating to the status of this application or
proceeding should be directed to the receptionist whose telephone number is (703)308-
0858.

Jacqueline F Stephens
Examiner

Art Unit 3761

May 6, 2002

,sohn G.Weiss
Superviaon/ Pstsnt Examtee?
Group 3700